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AGENDA: Tuesday, June 5, 2018

07:30 AM

BREAKFAST & REGISTRATION

08:30 AM

Portfolio Management and Patent Prosecution: Going Beyond Quality

Organizations are pushing for more quality in their patent portfolios in an effort to avoid invalidity challenges and mitigate the IPR threat. The recent procedural and judicial uncertainty at the PTAB and USPTO is now further complicating the patent landscape. To succeed, patent counsel must continue their drive for higher quality patents while navigating an ever more complex political and business landscape. Are your portfolio management and prosecution efforts ready for these challenges?

As China’s IP landscape evolves, the critical issues in enforcing your IP rights are now less about local protectionism and more about the pre-trial evidence preparation in absence of discovery, the selection of jurisdiction, the choice of defensible, evidence-prone patents, and the filing strategies that give you the arsenal to attack infringers.

This presentation will cover:

The perception or misperception of IP enforcement/remedy in China

What it takes to enforce or defend your IP positions using real-life litigation experience

Patent filing strategies unique to the Chinese market, in line with enforcement and validity

The risk of not taking IP measures or strategies in China

James Zhu, Ph.D.
Partner
JunHe LLP

10:00 AM

Litigation Trends in 2018 and Beyond

Even though patent lawsuits are trending down, 2018 could bring profound change to litigation options. The immediate fallout from the TC Heartland case is a shift of lawsuits away from Texas towards Delaware and California. Concurrently, the ITC has seen an uptick as it provides a speedy and effective enforcement option. Meanwhile, profoundchanges are coming at the PTAB - political will, new guidance from the USPTO director, and the fallout from the recent SCOTUS Oil States and SAS decisions all signal a forthcoming shift. What does a smart litigation playbook look like in 2018?

The one constant in a changing IP environment: Your patents are one of your company’s most valued assets. While enforcing is necessary to protect your market share and innovation, success is not guaranteed. As in-house counsel, your role is to tie back the legal risks and opportunities into business scenarios for the management team. How strong is your case? Are your enforcement goals and resources aligned? What’s the broader picture for enforcing IP?

This year, the rules of IP may be rewritten for the second time in less than a decade. The Supreme Court has weighed in on IPRs’ very constitutionality and the changes that must be made at the PTAB. Patent owners such as universities and famously Mohawk/Allergen have looked to utilize Sovereign Immunity as a strategy to avoid IPR which has caused concern in both the legislature and IP landscape. What’s the potential scope and impact of these changes? How to build optionality into your strategy?

Amidst an unfavorable patentscape, the allure of apparent indefinite exclusivity offered by trade secrets must be tempered by the very real and common risk of a breach. The Waymo v. Uber – $245 Million settlement is only the most recent in a long line of trade secret litigation that underscore the business and financial consequences of a breach. Are your trade secret policies in place? How bought in is your organization? Is your response plan ready?

This panel explores:

The decision matrix– Are Trade Secrets the right choice for your invention?